ADDRESS 



/ 



ON 



THE PATENT LAWS, 



DELIVERED BEFORE 



THE FRANKLIN INSTITUTE, 

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AT THE 



CLOSE OF THE ANNUAL EXHIBITION, PHILADELPHIA, 
OCTOBER, 1849. 



BY THE HON. JOHN Kf KANE. 



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WASHINGTON : 
BUELL & BLANCHAR1>, PRINTERS. 

1849. 



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INTRODUCTION. 



As an application will be made, at the present 
session of Congress, with a view to certain modifica- 
tions of the Patent Laws of the United States, it has 
been thought not improper to present the views en- 
tertained upon the subject by eminent judges of the 
courts of the United States. No man is entitled, 
both from his extensive legal and great scientific 
attainments, to higher consideration or regard than 
the Hon. John K. Kane, District Judge of the United 
States for the Eastern District of Pennsylvania ; and 
the accompanying Lecture, delivered by him before 
the Franklin Institute of Philadelphia, is earnestly 
recommended to the attention of Congress. 



ADDRESS. 



The Committee of Exhibitions have honored me with an invita- 
tion to make an address to you, this evening, and I have not felt 
myself at liberty to withhold so humble a contribution to the cause, 
of which our Institute is the eldest American representative. Yet, 
I am sensible that their selection has not been a happy one ; for 
the course of thought and reading, to which a sort of necessity has 
adicted me for some years past, has been too exclusively profes- 
sional to allow me the hope of engaging the favorable attention of 
a mixed audience. 

Limited, from this cause, to a narrow range of topics, I have con- 
cluded to offer you a few remarks on the apparent imperfections 
of our system of Patent Laws — those laws which have for their 
object to protect and reward improvements in the useful arts. The 
number of such improvements, which must have attracted your 
notice in the present exhibition, may perhaps invest this subject 
with a certain degree of interest. 

The policy, as well as duty, of returning to inventive genius a 
fair compensation for the benefits it has conferred upon society, is 
not in our times a topic for argument. In other countries its re- 
cognition may emanate from what is still called Hoyal Prerogative, 
but which is, in truth, only a trust, held in the name of an individ- 
ual for the benefit of the many — or it may be referred more directly 
to the popular sense of expediency and justice, as expressed in 
acts of occasional legislation ; but, among civilized States, it is 
known everywhere — sometimes as a boon of power, more fre- 
quently as a right. In our own land, it is expressly declared to be 
among the powers of Congress, " to promote the progress ofsci- 



6 
ence and the useful arts, by securing, for limited times, to authors 
and inventors, the exclusive right to their writings and discove- 
ries.'' 

The earliest patent law of the United States was passed at the 
first Congress that assembled under the Coristitution. It was, 
almost of course, imperfect ; for, in the year 1790, no foreign na- 
tion had matured a system of provisions on the subject, from which 
ours could be profitably copied. Nevertheless, it was a good law, 
and contrasted favorably with the law of England of that day. In- 
deed, I have sometimes doubted whether, brief as it is, it does not 
furnish a better basis for the system than any of those which have 
followed it. But, be this as it may, the legislation of more modern 
times, if less perfect in its outline, has been progressively more and 
more liberal in its details ; and the courts of justice have contrib- 
uted, by the increasing liberality of their interpretations, to amplify 
the benefits of the system. 

Yet it is still far from perfect ; neither the patentee nor the pub- 
lic derives from it the full and appropriate measure of security and 
benefit. The author of a meritorious invention finds himself not 
unfrequently made poorer by the letters patent that profess to re- 
ward him ; and the mechanical community is infested by swarms 
of impostors, who bear an apparent title, under the patent laws, to 
levy arbitrary exactions upon industry. 

Let me explain how this happens : An ingenious man has in- 
vented a labor-saving machine, and obtained a patent for it. He 
has begun to use it himself, and has sold licenses to others. It is 
a highly useful machine, we will suppose, producing, it may be, an 
entire revolution in some branch of art ; its usefulness universally 
admitted, by the unanimity with which it is adopted among his 
brother mechanics. It is, in a word, just the sort of invention that 
confers on society the highest benefit, and for which society is 
most anxious to reward him abundantly. 

Now, just in proportion as his invention is valuable, just in that 
proportion is the temptation to defraud him of it. The invention 
is at once pirated ; litigation follows ; for his exclusive title is 
worthless, unless vindicated ; and in this litigation, all who have 
invaded his rights, and all who have an interest in breaking them 
down, present a combined front against him. 

Libraries are rummaged to find, in ancient books, dreamy, half- 
formed, unpractical notions, bearing more or less of the same com- 



7 
plexion with the matter of his invention ; witnesses come from 
every quarter to tell of contrivances, like his in all but usefulness, 
that were once upon a time put together, in some rude imperfect 
mechanism, in some out-of-the-way place, and then abandoned. 
Old machines, that were in the Patent^Office before it was burnt, 
come out from their ashes, refined, improved, gifted with new 
vigor, by the imaginative memory of old men, when talking of 
things of the olden time. Scientific theorists are called in, (and 
there are many such, as impracticable as they are honest, who can 
see nothing new in any new combination of known agents,) to 
puzzle us with their arguments, and to demonstrate that, as the 
lever, and the pulley, and the inclined plane, and the wedge, and 
the screw, are the cardinal elements of the patented machine, and 
so in fact it consists of nothing else, therefore the invention has no 
novelty, and the patent is void. 

The poor inventor sits all this time in the court room, flushed 
and fevered, wondering much, and indignant, perhaps, as he hears 
that the invention, on which he has been wasting his strength and 
his fortunes for a lifetime, was known to all the world before he 
began, though no one thought of using it till he took out his patent, 
and every one uses it now. 

But he has his witnesses also, his books, and his theorists ; and, 
peradventure, he has been too poor or too wise to retain the own- 
ership of his patent right, and, having sold it out to some corpora- 
tion or some capitalist, he has become disinterested, and may be a 
witness himself, to detail in person the story of his invention. 

The story has been told ; and his case is now in the hands of his 
advocates — skilful and conscientious men — who have sought to 
master the subject, and have succeeded in so far reviving their 
college recollections of mechanical science, as to understand and 
explain the merits of their client. 

Their first business is to teach the Judge his lesson ; and this, if 
we may admit the testimony of the gentlemen of the Bar, is not 
always an easy one. There are few of us, indeed, that hold the 
judicial place, who must not confess our alienation from all other 
sciences except our own. The Law is a jealous mistress, that tol- 
erates no divided affections or pursuit, among those who aspire to 
her favors. 

But let us suppose this difficulty overcome, and that the Judge 
has succeeded during his intervals of leisure, as we term the Ian- 



guid intermissions between the exhausting sessions of his dailj 
court, in studying as many treatises of mechanics as are indispen- 
sable to a knowledge of the subject. The next thing is to enlight- 
en the jury — twelve men, gathered by lot from the streets and the 
byways, to render unanimous verdicts upon oath — unlearned men, 
whose office is to determine and apply scientific truths when the 
learned disagree — arbiters of art, often without one particle of in- 
struction in its simplest dialect. 

They retire to their jury room ; and there, without books to en- 
lighten them, but with an occasional newspaper perhaps to lead 
them astray by some distorted view of the evidence, or some igno- 
rant commentary upon it, they begin their consultations for una- 
nimity — stimulated not a little by the narrow comforts of a closely 
locked apartment, their "parlor, kitchen, and hall," on the floor 
of which, when night comes, they are permitted to spread their 
mattresses, and dream of that admirable procrustean device, the 
boast of Anglo-Saxondom, which claims to expand one conscience, 
and contract another, till they shall coincide. If, under circum- 
stances so favorable to a harmonious conclusion of their labors, 
they obstinately refuse to think alike, they must be discharged 
at last; and the whole affair, with its witnesses and books and 
theories, its expenses and excitement, is to be begun over 
again, and again, and again, until twelve " sober and judicious 
men" are found to concur in the same "true verdict," upon their 
oaths. 

For the sake of hurrying through this detail of incidents, with 
which all of us are familiar, let me imagine at once that a verdict 
has been rendered, that it is in favor of the patent right, and that 
the Judge is so far satisfied with it as to refuse the defendant's mo- 
tion for a new trial, and that there is besides no legal excuse for 
submitting the final judgment by writ of error to a Court of Review. 
The patentee has triumphed — in one cause — against one defend- 
ant — in one judicial district. Each new defendant, each new 
cause, opens anew the whole question of the originality of his 
invention ; and for each succeeding trial, in each of the thirty odd 
judicial districts of the United States, from New Hampshire to 
Texas, between Cape Cod and San Francisco, the patentee is to 
come, prepared with all his testimony, to encounter the same vex- 
ations, and abide the same hazard. 

Is this the just and politic reward of inventive talent, for its 



9 

self-devotion to the public benefit ? I have seen men, over and 
again, who had grown gray in litigation and penury, by seeking 
to vindicate for themselves the rights, which the faith of the Gov- 
ernment was pledged that they should enjoy. I have known a 
patent, among the most meritorious that have done honor to our 
country, which, after the lapse of more than twenty years, had pro- 
duced nothing to the inventor but barren praise and substantial 
wretchedness, still continuing to '-'hold the word of promise to the 
ear, and break it to the hope." 

On the other side, I have said that the present patent laws do 
not secure to the public its just and stipulated share of advantages. 
Under the law now in force, inventions undergo a much more 
careful scrutiny before the patent issues, than used to be the case. 
But there are nevertheless numerous patent rights in existence, 
which are without essential merit, and which recoil from judicial 
scrutiny, either because of a want of originality in the patentee, an 
imperfect development of his alleged invention, or some other less 
innocent as well as less apparent defect of character. 

The owners, or alleged owners, of these patent rights, are found 
from time to time in the neiMiborhood of our manufacturinof estab- 
lishments, denouncing infractions of their rights, threatening in- 
junctions in Equity, and suits for damages at Common Law — but 
winding up generally with propositions for an amicable adjustment, 
on terms mutually advantageous. Like the applicant for office that 
Mr. Madison used to tell of, who began by asking for the emolu- 
ments of Secretary of the Treasury, but condescended, afterwards, 
to an Inspectorship of the Customs, and closed by soliciting a pair 
of cast-off breeches, these gentlemen become progressively more 
reasonable as their proffers are refused, and are generally content 
at last to accept, as a black-mail compromise, an amount some- 
what smaller than would pay the expenses of a defence against 
them. 

There is, indeed, no effective method, under our present patent 
laws, for testing the validity of an asserted patent right, without 
first violating it, and thus encountering the hazards of a suit for 
damages. You cannot compel the patentee to come forward and 
sustain his right beforehand. On the contrary, the law almost in- 
vites him to lie by and await infractions, as a spider waits for flies 
to infringe upon the fabric of his ingenuity, and only proves his 
strength after he has secured a victim to feel it. 



10 

You see at once what a dangerous power this leaves in the hands 
of an unprincipled patentee; how effectually, by the mere sem- 
blance of a patent right, he may deter others from the use of pro- 
cesses, or of machinery, to which he has no exclusive right in fact; 
since few men are sufficiently confident in their own opinions, or 
in the opinions of others, to invest large amounts of capital in a 
business of which the legality may be disputed, and which, if 
deemed unlawful by a court of justice, may be afterwards arrested 
by injunction or mulcted in exemplary damages. And thus, in the 
result, the public is restrained from the use of inventions which are 
in truth public property, having either been patented imperfectly or 
fraudulently, or never patented at all by the real inventor. 

There may be, and no doubt there are, other defects in our sys- 
tem of patent laws ; but these A^hich I have indicated are among 
the most obvious and important. They are, besides, as ancient as 
the system itself, and have contributed from the first to impair its 
popularity as well as its usefulness. We have all of us known in- 
genious men, who refused to patent their discoveries, preferring 
rather to retain a precarious and difficult but exclusive enjoyment 
of them, by working in secret ; and there are very few mechanicians 
who have not been indignant at the frauds to which the patent laws 
made it their policy to submit. 

The injury which is retorted upon society by this imperfect pro- 
tection of meritorious inventors, is more extended and full of con- 
sequences than it appears to be at first. The man who withholds 
an important discovery from the world does not make others 
poorer in merely the same degree in which he hopes to enrich 
himself He limits the circle of useful art, to which the ingenious 
suggestions of other minds might have expanded his invention. 
He holds back from his fellows that strong incentive to progress, 
the knowledge of what another has achieved. He buries the 
talent which should have yielded increase. He is eating the seed 
wheat which should have ministered to the abundance of future 
harvests. 

Yet it would seem as if these defects were none of them really 
inherent in a system for the protection of inventive genius, though 
the remedy for them might perhaps involve some startling changes 
in our venerable forms of forensic procedure. 

No one who has studied political history can undervalue the trial 
by jury, as a safeguard of popular rights ; but I have not yet found 



11 

the frank and well-practiced jurist who would be content to trust 
to its arbitrament an issue involving large familiarity with science, 
acute analysis, or continuous reasonings. 

The metaphysics of social life, which we denominate the law, 
rarely challenge more refined and intricate discussions than some 
of the questions which arise under our patent laws. The difficulty 
which embarrasses the learned in both sciences is found, not in 
determining upon those abstract truths which we call fundamental 
principles, and which to them are always simple, if not obvious, 
but in selecting out from the mass of such truths those which apply 
most directly to the particular case, and then in assigning to each 
its appropriate share of influence or control ; and a weary difficulty 
it often is, even for the best of us. But what must it be for those 
whose minds have undergone no special training in science — for 
whom there are no axioms, no starting points in argument, no defi- 
nitions, no vocabulary, no alphabet even ! For we think in words, 
and cannot begin to reason till we have been instructed in the lan- 
guage of argument. 

Imagine the feeling of a conscientious juryman, who is required 
to decide a question on his oath, while he is absolutely ignorant of 
the very terms in which the question is expressed ! And imagine, 
too, what confidence, what hope even, there can be for a party, 
that his rights will be understood and established by any action of 
twelve such jurymen ! Except to compute the damages which a 
patentee has sustained, after his claim to damages has been made 
out, it is often difficult to apprehend what possible good office is to 
be rendered by a jury in a patent case. Does it not savor of the 
grotesque, to call upon such men as compose our juries to con- 
sider of the scientific controversies of chemists and mechanicians — 
to follow Professor Henry, perhaps, upon inductive electricity, in 
some dispute between the tetegraphs, or to analyze the merits of 
Mr. Tilghman's method for the alkaline chromates ? 

Now, why should this be ? Why not refer these questions to 
men who understand them, or at least to men who can be taught 
to understand them ? When an English judge of admiralty is re- 
quired to pass upon a dispute involving nautical skill, he calls to 
his aid experts in the art of navigation, ancient masters of the Trin- 
ity House, and is indoctrinated by their counsels. In the same 
manner, the judge of a similar court in our own country invites two 
or more experienced shipmasters to hear the evidence and argu- 



12 

ments with him, whenever the question is one that appeals to a 
knowledge of seamanship and the sea. And, so far as I have . 
heard, decisions made under such circumstances have in every in- 
stance satisfied the nautical community, if even they have not had 
the more extraordinary good fortune of convincing the parties to 
the litigation. 

They have applied a similar practice in France to the determi- 
nation of legal disputes between the holders of patent rights and 
those who are accused of infringing them. If the judge does not 
consider himself conversant enough with the art to which the in- 
vention belongs, to allow him to form a confident opinion, he ap- 
points three artists, to inquire whether the alleged invention of the 
patentee is novel, and whether there has been an infraction of it 
by the defendant. The report which is made by this commission 
includes a full exposition of the questions of science or of art which 
are involved in the case. It is open to a free canvass afterwards, 
by the counsel of the parties, before the judge ; and his adjudica- 
tion follows. I should think this feature of the French system an 
excellent one. We have something analogous to it in our pro- 
ceedings in equity, where we occasionally invite a similar report 
from scientific men ; but I do not see why it should not be intro- 
duced also into our actions at law, as a substitute for the jury trial 
which we have inherited from the English system. 

Nor do I see the necessity of leaving the public in uncertainty, 
as to the extent or validity of a patentee's rights, until some one 
has been daring enough to violate them, and they have been vindi- 
cated after the infraction. The question may be settled just as well 
before, moie speedily as well as economically for the patentee, and 
much more safely and beneficially for the public. Here, again, I 
think the French law wiser than our own. " Every man," says one 
of its commentators, [Perpigna, ch. 5, sec. 2,) " before he begins a 
commercial undertaking which may require the investment of con- 
siderable capital, has a right to ascertain whether or not the sup- 
posed privilege exists ; because, as the patentee proclaims his ex- 
clusive right, every one concerned in the trade, with which the 
patented invention may be more or less connected, is in constant 
fear of involuntarily infringing the patent right, and running the 
risk of a prosecution and condemnation for piracy." The very 
moment, therefore, a patent is granted under the laws of France, 
every one has a right to bring an action for the repeal of it." 



13 

Not only would I be disposed to allow every one to contest the 
validity of a patent right in advance of a lawsuit to recover damages 
for infringing it, but I would admit no controversy as to the valid- 
ity of a patent, in a suit founded on its infraction. I would hold 
letters patent, under the great seal of the United States, to be 
conclusive evidence of their own validity, so long as they remain 
unrevoked by a judicial determination. But I would permit the 
man who is charged with violating them, as I would permit 
every other man, to institute proceedings for revoking them at 
any time. 

Of course, such proceedings, to make them conclusive upon the 
public, must be well guarded against collusion and abuse. They 
should be conducted with great publicity, and preceded by ample 
notice. The specific grounds on which the patent is to be con- 
tested should be clearly and fully declared beforehand ; all persons 
whatever should be allowed to join in sustaining them by facts and 
arguments ; and the attorney of the United States for the district, 
or perhaps a professional representative of the Government, spe- 
cially appointed to attend upon such investigations, should take 
part in the case, though without so controlling it as to thwart the 
action of others. But when such a controversy has been conducted 
publicly and fairly, I see no reason why the patent, if found fraud- 
ulent or defective, should not be declared to be so as to all 
the world, and thereupon revoked; nor why, if the patent has 
withstood successfully the assault of all comers, it should not be 
exempt from future controversy upon the points solemnly adju- 
dicated in its favor, leaving it open to impeachment thereafter only 
upon grounds not before in contest. 

A patent, renewed upon the expiration of its first term, for causes 
such as now justify a renewal, signal merits namely, and inadequa- 
cy of compensation for the good rendered to the public, I should 
hold for that reason alone protected against all further attack on 
the score of originality or usefulness. Fourteen years, either of 
general acquiescence in his title, or of successful litigation in de> 
fence of it, should earn for the meritorious and ill-rewarded patentee 
a parting season of repose. Solve Senescentem. 

This is not an occasion that could tempt me to elaborate the 
details of such alterations as I have suggested; and I am sensible 
that it must be the work of more time, and more familiarity with 
our patent system, past as well as present, than belong to me. But 



14 

it is conceded that the law as it stands is sorely in need of revision ; 
and it is perhaps the duty of every one, who has been constrained 
to remark its defects, frankly to suggest what appears to him the 
most simple and effective remedy. 

I trust, too, that I shall not be thought to have chosen an im- 
proper forum before which to make these suggestions. There is 
no institution that exerts so important or so beneficial an influence 
over the inventive genius of our countrymen, as that before which 
I am standing at this time ; there is no body of men among whom 
it is so easy to find intelligent and skillful counsellors upon every 
question which can interest our mechanics ; and I do not know of 
any whose judgment I would so cheerfully refer to, on questions 
connected with the patent laws. No one who remembers what 
mechanics and the arts were in Philadelphia, and who sees what 
they are, but bears grateful testimony to the value of the lecture- 
ships of the Institute, its public meetings, the labors of its commit- 
tees, its exhibitions, and its system of premiums, in elevating the 
tone of our industrial classes, improving their modes of work, stim- 
ulating the spirit of invention among them, and enlarging their 
sphere of thought. 

The effect of all this action upon the further progress of mechan- 
ical science among us must go on continually increasing. In the 
old countries, as manufactures have become matured, the division 
of labor has had a manifest tendency to check improvement in the 
arts. The artificer, whose whole business of life is to graduate an 
arc, or to set the knife-edge of a scale-beam, will no doubt become 
apt at his work, but he cannot be expected to devise modifications 
of the theodolite or the balance. If he were even to imagine a 
change for the better in the work which forms his limited depart- 
ment, he could not carry it into effect, for he knows too little of 
the rest of the machine to enable him to modify its parts, so as to 
admit his improvement. 

But here — thanks to the Franklin Institute, which has made our 
mechanics mechanicians — and thanks, too, to our system of com- 
mon schools, which encircles us with a community of intellectual 
men — and thanks, more than all, to the spirit of our political Insti- 
tations, which stamps Progress on everything within and around 
us — the American artificer cannot be made to cramp down his 
thought to the single object of his daily toil. He has asserted his 
claim to the dignity and the rights of manhood, " looking before 



15 

and after," at the past from which he has risen, upon the fu- 
ture to which he aspires. It may be that he makes a horse-shoe 
nail more slowly or less neatly than his European grandfather of 
the trade was wont to do, but he is thinking out a machine which 
will make it for him twice as well and a hundred times faster. 

To such a man, the teachings of the Institute are of inestimable 
value. Besides the acquaintance which they give him in those 
deparments that are kindred to his own, they suggest to him 
topics of inquiry and experiment, making him familiar with what 
others have done already, and distinguishing for him between that 
which lies within the possible limits of art, and that which the laws 
of nature have placed beyond them — thus dividing him by a broader 
line from that ancient fraternity of empirics, the so-called practical 
men, the self-taught, self-conceited, self-vaunting blunderers of the 
workshop. 

I have only one more observation to make, and I pray that it 
may be received with indulgence. The power, which is appro- 
priate to an institution constituted and conducted as this has been, 
imposes a corresponding responsibility on its members. I do not 
mean in their aggregate capacity — that is too obvious to call for 
remark. But the reputation of the entire body is reflected upon 
its members ; and each of them exerts, however unconsciously, an 
influence which should not be misdirected. The number of new 
inventions, which is called for by the growing competition of in- 
dustry in all its walks, and which the utmost efforts of mechanical 
ingenuity are scarcely adequate to satisfy, is daily making it more 
and more difficult to define the exact extent of each man's rights 
as an inventor. What combination shall be regarded as essentially 
new, where the elements employed are old, and both the object 
and the result are old also, is sometimes a question of the nicest 
casuistry. As a consequence, all who have interests to subserve, 
either by the success or the overthrow of a controverted patent 
right, are indefatigable in their eflTorts to secure in advance the tes- 
timonials of scientific men in their behalf — well knowing how 
powerfully these may be employed in preoccupying public senti- 
ment. The importance which so justly attaches to your opinions, 
gentlemen of the Institute — the difficulty, not always apparent at a 
glance, of arriving at correct conclusions without special examina- 
tion — and the magnitude of the interests which may be affected 
injuriously by a judgment hastily expressed — these, together, from 



16 

an argument for the gravest caution, whenever you are individually 
solicited to take a position either favorable or adverse to the 
claims of a patentee. 

In conclusion, I perform a most grateful office in congratulating 
my brother members of the Institute upon its condition and pros- 
pects, and thanking them for the attention and courtesy with 
which they have listened to me. 



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